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Symposium on Article 123(2) EPC

27 February 2014

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On 7 February, a symposium on EPO practice
regarding Art. 123(2) EPC took place at the EPO's Munich headquarters. Twenty-five
senior patent professionals from Europe, Japan and the USA took the opportunity
to share experiences with EPO examiners, lawyers and procedural experts in an
effort to enhance understanding of how examiners apply Art. 123(2) EPC, and raise
awareness among examiners of the problems encountered by users.

For
a few years, external users have been questioning EPO practice related to
amendments in examination or opposition under Article 123(2) EPC. The ability
to amend an application in response to objections raised by examiners is
essential to ensure a constructive and efficient dialogue and finally a solid
patent. However, to ensure fairness towards the public, this right must be limited
so that amendments do not extend beyond the content of the application as
originally filed. The criteria applied in this assessment have been developed
on the basis of decisions of the Boards of Appeal. Some of these criteria formed the heart of the discussions at the
symposium.

Heli Pihlajamaa, Director Patent Law

Margot Fröhlinger, Principal Director Patent Law and Multilateral Affairs, welcomed the participants and Heli Pihlajamaa, Director Patent Law, and Alfred Spigarelli, Director Patent Procedures Management opened the plenary session with an overview of EPO practice in assessing Art. 123(2) EPC according to the principles laid down in the Guidelines for Examination, H-IV and H-V, and highlighted recent case law developments.

John
Hornickel from the American Intellectual Property Law Association (AIPLA), Yasuda
Ryosuke from the Japan Patent Attorney Association (JPAA), and Gabriele Leißler-Gerstl
from the European Patent Institute (EPI), presented the US, Japanese and
European perspective on Article 123(2) EPC. The three presentations provided a good
basis for comparison of the different practices.

In
the afternoon, the participants were divided into four break-out sessions
depending on their technical field: mechanics, electricity/physics, chemistry
and biotechnology. Each group comprised a director in the field of examination,
two examiners, and EPO experts on patent law and patent procedures management,
as well as five to ten patent professionals, with the chemistry being the
largest group.

For two
and a half hours, these groups discussed current practice on the basis of examples
provided by both the patent professionals and examiners.

The
results of the break-out sessions were presented in the final plenary session. Inter alia the following conclusions
were drawn:

There was a broad consensus that the same
criteria should be used for the assessment of added subject-matter, novelty and
priority.

The patent professionals advocated less
formalism in the assessment of Art. 123(2) EPC, and more consideration of the
actual invention, more in the sense of what a skilled person could understand.

The criterion "directly and unambiguously" does
not mean "literally", as also stated in Guidelines, H-IV, 2.3. Yet, it was felt
that in certain cases it is overlooked that the application is directed to the
skilled person, who may take his common general knowledge into account in order
to determine what is directly and unambiguously derivable from the application
as filed.

Alfred Spigarelli, Director Patent Procedures Management

A too strict approach obliges applicants to
inflate their applications with all possible combinations to anticipate
possible amendments. This is particularly problematic in cases of selections
from multiple lists.

Added subject matter issues were found to take
too much time, e.g. during oral proceedings; the focus should lie more on substantive
issues, such as inventive step.

Applicants were advised to make full use of Rule
137(4) EPC and provide convincing arguments, especially if the basis is less
obvious.

The
results of the break-out sessions were further discussed in a lively
round-table discussion, before Ms Pihlajamaa and Mr Spigarelli closed the
symposium.

The
participants were unanimous that the constructive discussions at the symposium
contribute to an enhanced mutual understanding on Art. 123(2) EPC. The conclusions
formulated by the respective technical fields will be carefully studied and will
be used for enriching and improving part H of the Guidelines.